Image Protection at Universities

at_stanford_universityThe Chronicle of Higher Education (subscription required so no link) notes that Hollywood tends to ask universities and colleges for permission before they set their films or television shows at a particular campus. So Felicity attends University of New York instead of NYU, and Legally Blonde is set at Harvard instead of, wait for it … University of Chicago? Odd but apparently true (my guess is that this turn of events helped the film. No offense to Chicago but as a matter of pop culture Harvard probably takes the prize). One possible culprit according to the article is our friend US News and World Report and the ranking game. Since the report started ranking undergraduate institutions films reference real schools, rather than random State U, 29 percent of the time as opposed to 19 percent before the US News games began. The claim is that references might seem to be endorsements. So Stanford only allows “aspirational” portrayals; read here goody-goody overachievers. The article claims that Stealing Harvard was originally Stealing Stanford, but the farm rejected that idea “Since Stanford is need blind” and the story of needing to steal to go to the school would be unreal (as many fictional stories are). In contrast, Harvard seems to realize that a fictional story is just that and seems more generous about the names and so on. Note that most schools are more restrictive about shooting on campus but may embrace the idea for the fees they can charge.

All well and good, but whether there really is a trademark claim as the article suggests and the schools seem to think (note that Dawson’s Creek also wished to avoid conflict and invented Worthington University as a generic Ivy although ironically shot at Duke) is troubling. The expansive notion of association seems to fuel this perspective. But as Sandy Rierson and I argue in the Confronting the Genericisim Conundrum uses such as these are expressive and in that sense irrelevant to the market transaction trademark is supposed to be about. On a similar wavelength Mark Lemley and Mark McKenna seem to be arguing that other uses of trademarks are not relevant to trademark analysis (To be clear, I have yet to read the paper, and it may be that this sort of use would be actionable according to Mark and Mark (or dare I say it? Dare. Dare. Mark y Mark?).

In short, if one considers the feedback loop in play here, the more expressive uses that are made, the less likely people will think that Standford endorsed a portrayal. In addition, what about more critical commentary that could be set a university? Setting up a system of permissions is dangerous. Last, maybe Harvard has it correct: people are not that stupid. They can tell the difference between a fictional story and a claim to reality. Can’t they?

Image Source: Wikicommons
By: Yukihiro Matsuda from Kyoto (and Osaka), Japan

Creative Commons Attribution 2.0 License

Size Matters or What’s an IMAX?: Thoughts on Branding and Meaning

london_imax_cinema1_2The recent flap over whether an IMAX screen is really an IMAX screen shows how fragile a brand can be. As some of you may have heard, actor Aziz Ansari went to see Star Trek at an IMAX theater in Burbank and paid a five dollar premium to do so. But when Mr. Ansari went into the theater, he was not in a wonderful, cavernous theater. Instead he was watching the film on a screen not much larger than an ordinary screen. Ansari blogged about his displeasure and the news spread. At first IMAX played the corporate head-in-the-sand/obfuscate game with statements on Wired asserting that IMAX does not mean 72 foot screen and that the new theaters may be smaller but they still deliver the IMAX experience. And there’s the problem. IMAX thinks it knows what the experience is and means to its consumers (or it certainly wants to try and tell consumers what it means). So it appeared that IMAX fell into the control-the-meaning of the mark trap, which Sandra Rierson and I have argued is futile and causes serious problems for trademark law. Yet there seems to be a useful lesson and happy ending to this trademark story.

IMAX is expanding rapidly and becoming a big player in Hollywood’s attempt to keep the theater experience alive. So IMAX is partnering with theaters to install IMAX branded theaters at mulitplexes. The strategy has worked to expand the company’s reach. Now that it is summertime, however, the strategy is being tested, for summertime means tent pole movies, and many more people wanting that summer movie thrill. Indeed, ever since television, Hollywood has tried to offer viewers an experience that they cannot have at home: bigger screens, better sound, special effects that make your head explode. Technology and trademarks have traveled along with that quest. Panavision, Cinemascope, Dolby, THX, and DTS, signified a way of filming and/or presenting a film in a theater. They became trademarks as well. Recently, with the growth of home theaters Hollywood has been looking for new ways to make the public theater experience worthwhile. IMAX seems to be the latest way to indicate a special experience that is often lacking in cinema houses today.

I certainly miss the movie palaces of L.A. For me, 70mm screens and sound that may break up kidney stones are worth the eleven or twelve dollars a ticket can cost in a major city. Sadly, movie palaces gave way to multiplexes, and so one rarely can find that all encompassing, immersion a single, massive screen offers. IMAX has started to fill this gap. Yet, in my opinion, the company is diluting its brand by offering what many would call non-IMAX experiences under the name IMAX.
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The Watchmakers’ Court and Related Curiosities

[Cross-posted from Concurring Opinions]

This recent New Yorker piece about “Baselworld,” the annual watchmakers’ confab in Switzerland (Patricia Marx, “Face Value,” May 25, 2009) included a throwaway line that I found fascinating.  Baselworld is so large that it has its own police force and “a judiciary to settle trademark disputes.” Whoa. Huh? Continue reading

Where Trademarked “Eagles” Dare

[Cross-posted from Concurring Opinions]

The world is again safe for trademark law, now that the National Rifle Association has put an end to efforts at the University of Wisconsin-La Crosse to name the university’s eagle mascot “Eddie.”

For 20 years, the eagle has been the mascot of athletic teams at UW-L. Only earlier this month, however, did students at the campus get around to voting on a name for the bird, and the name they chose was “Eddie.” Unfortunately, “Eddie” is also the trademarked name of the mascot of the NRA’s “Eddie Eagle GunSafe Program,” which is aimed at students in pre-K through the third grade.  Apparently claiming that marketplace confusion would likely result from use of “Eddie the Eagle” in a post-secondary educational setting, when benchmarked against the elementary educational programming offered by the NRA, the NRA forced the university to stand down.

Undeterred by possible claims of intellectual property rights in alternative names, the students re-voted and named their eagle “Colbert.” Apparently, neither the actor nor the character objects to the use of a name that is likely protected by trademark law and right of privacy and/or publicity law, or both — despite the obvious and ubiquitous association of “Colbert” with eagles.  This seems to put Stephen Colbert squarely at odds with the National Rifle Association, at least when it comes to symbolic representations of birds of prey. 

There is no word on the matter of the validity of the NRA’s mark from the original Eddie the Eagle – Eddie Edwards, former ski jumping champion of Great Britain and world-famous competitor in the Calgary Olympics, who taught all of us important life lessons.

Don’t Even Think About It: Negative Ad Words and Trademark Injunctions

A U.S. District Judge has enjoined a defendant from using a term for its business. That is not an unusual result. The one part of the order that may be of note is that the defendant is not allowed to purchase ad words using the plaintiff’s mark and the defendant must use negative adwords as well on search engines. Here is the pertinent language:

[Defendant is enjoined and restrained] from purchasing or using any form of advertising including keywords or “adwords” in internet advertising containing any mark incorporating Plaintiff’s Mark, or any confusingly similar mark, and shall, when purchasing internet advertising using keywords, adwords or the like, require the activation of the term “ORION” as negative keywords or negative adwords in any internet advertising purchased or used.

So here the mark is Orion. The defendant has been found to have infringed. The normal range of prohibited future activities is in place. But in addition, the defendant must take steps to prevent its appearance on a search engine results page when someone is looking for the plaintiff’s services. The court explains:

For purposes of this court order, a “negative keyword” or “negative adword” shall mean a
special kind of advertiser keyword matching option that allows an advertiser to prevent its advertisement from appearing when the specific terms are a part of a given user’s internet search or search string. It does not infer that the Defendant may use the specified negative keywords or adwords for any other purpose.

Now it seems the defendant was rather blatantly trying to use the plaintiffs mark (counsel appeared but an answer was not filed). Yet, if the plaintiff’s mark and business match the litany of strength that the court offers (‘ranked fourth in the nation among community bank holding companies and thrifts for outstanding performance,” “In June of 2006, Plaintiff was ranked as Florida’s Top Performing Community Bank for the second consecutive year, and was also ranked among the nation’s top performing bank holding companies,” “In June of this year, American Bankers Association’s (ABA) Banking Journal, ranked Orion Bancorp, Inc., fifth in the nation for outstanding financial performance”), wouldn’t a competitor want to be able to appear when someone searched for the premiere bank of the region? Shouldn’t that be allowed?

Given the facts of this case, the defendant may have behaved so badly that such an option is not merited. Still as a general matter, one might infringe but still be allowed to compete. Requiring active steps so that one’s business does not appear in a search result goes a bit far. In a world of virtual shopping, attention is a key lever in building business. Many of the facts of this case point to infringement. But the negative adword limitation essentially stops someone from competing online. The concern is that the smaller player will barely be able, if at all, to get in someone’s face and say yes the larger company exists but so do we.

As larger matter, the Dinwoodie/Janis Dogan/Lemley use debate may inform this issue. Still, if I remember correctly, Dinwoodie and Janis think comparative advertising is a good thing but that use is not the way to protect it. Rather they offer that better injunctions will address the contextual issues. Rebecca Tushnet’s Gone in 60 Milliseconds: Trademark Law and Cognitive Science also merits a read as it questions harms based on association which seems to be part of the negative adwords solution here.

cross-posted at Concurring Opinions